United States Patent and Trademark Office 2011 – Federal Register Recent Federal Regulation Documents
Results 1 - 44 of 44
Electronic Delivery of Search Results From the United States Patent and Trademark Office to the European Patent Office
The United States Patent and Trademark Office (USPTO) has recently begun electronic delivery of search results from U.S. patent applications to the European Patent Office (EPO) to assist U.S. applicants who later file in the EPO to comply with amended Rule 141(1) of the EPO's implementing regulations to the European Patent Convention (EPC). As a result, U.S. applicants subject to amended Rule 141(1) EPC will not need to separately file their U.S. search results with the EPO, thereby providing time and cost savings to these applicants.
Revision of Patent Term Adjustment Provisions Relating to Appellate Review
The United States Patent and Trademark Office (Office) is proposing to revise the patent term adjustment provisions of the rules of practice in patent cases. The patent term adjustment provisions of the American Inventors Protection Act of 1999 (AIPA) provide for patent term adjustment if, inter alia, the issuance of the patent was delayed due to appellate review by the Board of Patent Appeals and Interferences (BPAI) or by a Federal court and the patent was issued under a decision in the review reversing an adverse determination of patentability. The Office is proposing to change the rules of practice to indicate that the period of appellate review under the patent term adjustment provisions of the AIPA begins when jurisdiction over the application passes to the BPAI rather than the date on which a notice of appeal to the BPAI is filed. The Office recently published the final rule (eff. date Jan 23, 2012) concerning practice before the BPAI in ex parte appeals and defined that jurisdiction of the appeal passes to the BPAI at the earlier of the filing of the reply brief or upon the expiration of the time in which to file a reply brief. See Rules Of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals 76 FR 72270, 72273 (November 22, 2011). Accordingly, for purposes of calculating patent term adjustment based upon appellate review, the impact of the rule change would be to reduce the amount of patent term adjustment awarded for successful appeal under 35 USC 154(b)(1)(C)(iii). However, the impact may be offset by potentially increasing the amount of patent term adjustment awarded for failing to issue the patent within three years of the actual filing date in the United States under 35 USC 154(b)(1)(B). The patent term adjustment award for the three year provision may increase when the examiner reopens prosecution after a notice of appeal is filed (e.g., following a pre-appeal conference or an appeal conference) and the patent issues thereafter, because the period of time between the filing of the notice of appeal and the examiner's reopening of prosecution would no longer be deducted under 35 USC 154(b)(1)(B)(ii).
National Medal of Technology and Innovation Nomination Evaluation Committee
The Department of Commerce (United States Patent and Trademark Office) is requesting nominations of individuals to serve on the National Medal of Technology and Innovation Nomination Evaluation Committee. The United States Patent and Trademark Office will consider all timely nominations received in response to this notice as well as from other sources.
Extension of the Extended Missing Parts Pilot Program
The United States Patent and Trademark Office (USPTO) implemented a pilot program (Extended Missing Parts Pilot Program) in which an applicant, under certain conditions, can request a twelve- month time period to pay the search fee, the examination fee, any excess claim fees, and the surcharge (for the late submission of the search fee and the examination fee) in a nonprovisional application. The Extended Missing Parts Pilot Program benefits applicants by permitting additional time to determine if patent protection should be soughtat a relatively low costand by permitting applicants to focus efforts on commercialization during this period. The Extended Missing Parts Pilot Program benefits the USPTO and the public by adding publications to the body of prior art, and by removing from the USPTO's workload those nonprovisional applications for which applicants later decide not to pursue examination. The USPTO is extending the Extended Missing Parts Pilot Program until December 31, 2012, to better gauge whether the Extended Missing Parts Program offers sufficient benefits to the patent community for it to be made permanent.
Extension of Comment Period Regarding Comments on Intellectual Property Enforcement in China
To provide interested parties with the opportunity to comment further to the original request for public comment (see https:// www.gpo.gov/fdsys/pkg/FR-2011-10-17/pdf/2011-26757.pdf), The United States Patent and Trademark Office (``USPTO'') is extending the period for public comment regarding any challenges that U.S. inventors and companies are facing with the judicial and/or administrative patent enforcement systems of the People's Republic of China. USPTO invites any member of the public to submit written comments on China's patent enforcement system, including, but not limited to, the following five topics: acquisition and enforcement of utility model and design patents; evidence collection and preservation in Chinese courts; obtaining damages and injunctions; enforceability of court orders and judgments; and administrative patent enforcement. The USPTO would like to resolve rights holders' concerns by working with them to identify problems regarding these and other areas of China's patent enforcement system so that it can then address these issues with the Chinese Government. To help the USPTO address these issues, it encourages interested members of the public to respond to this request.
Request for Comments on Eliciting More Complete Patent Assignment Information
The United States Patent and Trademark Office (USPTO) is considering several changes in practice designed to encourage a more complete record at the USPTO of patent assignments. The USPTO invites the public to provide comments on methods the USPTO can employ to collect more timely and accurate patent assignment information both during prosecution and after issuance.
Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte
The United States Patent and Trademark Office (USPTO or Office) amends the rules governing practice before the Board of Patent Appeals and Interferences (Board or BPAI) in ex parte patent appeals. The Office amends the rules to: Remove several of the briefing requirements for an appeal brief, provide for the Board to take jurisdiction over the appeal earlier in the appeal process, no longer require examiners to acknowledge receipt of reply briefs, create specified procedures under which an appellant can seek review of an undesignated new ground of rejection in either an examiner's answer or in a Board decision, provide that the Board will presume that the appeal is taken from the rejection of all claims under rejection unless cancelled by an applicant's amendment, and clarify that, for purposes of the examiner's answer, any rejection that relies upon Evidence not relied upon in the Office action from which the appeal is taken shall be designated as a new ground of rejection. The Office also withdraws a previously published final rule that never went into effect.
Discontinuing the Mass Mailing of Paper Fee Schedules to Registered Attorneys, Agents, and Deposit Account Holders
The United States Patent and Trademark Office (USPTO) is discontinuing the mass mailing of revised paper fee schedules to registered attorneys, agents, and deposit account holders when fees are adjusted due to enactment of legislation or fluctuations in the Consumer Price Index. Since a substantial majority of filings and fee payments are submitted on-line, and the most up-to-date fee schedule is always available and maintained on-line, the USPTO has discontinued the mass mailing of the paper fee schedules. The current fee schedule is essentially built into the on-line systems (e.g., EFS-Web, TEAS, accessible through the USPTO home page, etc.), which display the current fee amounts required at the time of submitting the payment.
National Medal of Technology and Innovation Nomination Evaluation Committee Meeting
The National Medal of Technology and Innovation (NMTI) Nomination Evaluation Committee will meet in closed session on Friday, November 18, 2011. The primary purpose of the meeting is to discuss the relative merits of persons, teams and companies nominated for the 2011 NMTI Medal.
Grant of Interim Extension of the Term of U.S. Patent No. 5,407,914; SURFAXIN® (Lucinactant)
The United States Patent and Trademark Office has issued an Order Granting Interim Extension for a third one-year interim extension of the term of U.S. Patent No. 5,407,914.
Request for Comments on Intellectual Property Enforcement in China
As China has become a major trading partner for the United States, U.S. rights holders are increasingly seeking to protect and enforce their intellectual property (IP) in that country. China's patent and trademark offices are now among the largest in the world in terms of filings, and its IP enforcement system is being increasingly utilized by U.S. rights holders. Ensuring that the Chinese IP system works in a fair and timely manner for U.S. innovators is a top priority for the U.S. Government. To that end, the United States Patent and Trademark Office (USPTO), in collaboration with other U.S. Government agencies, is leading an effort to identify and assess the challenges U.S. inventors are facing with China's judicial and administrative patent enforcement systems. The USPTO would like to address the concerns of rights holders by working with them to identify problemssuch as difficulties in gathering evidence, meeting evidentiary requirements, protecting proprietary information, obtaining adequate damages, and enforcing preliminary injunctionsto then find ways to address these issues with the Chinese Government. As part of this effort, the USPTO, in coordination with the White House Intellectual Property Enforcement Coordinator (IPEC), has conducted a series of roundtables to obtain the views of diverse members of the patent community who have first-hand experience enforcing their patents in China. Roundtables were held on July 19, 2011, in Washington, DC; on July 26, 2011, in Beijing, China; on July 29, 2011, in Shanghai, China; and on August 1, 2011, in Guangzhou, China. Topics for discussion included: (1) Acquisition and enforcement of utility model and design patents; (2) evidence collection and preservation in Chinese courts; (3) obtaining damages and injunctions; (4) enforceability of court orders; and (5) administrative patent enforcement. To ensure that the USPTO receives a wide array of views, the USPTO would like to invite any member of the public to submit written comments on China's patent enforcement system, including, but not limited to, the five specific issues listed above. Examples of first- hand experience using China's patent enforcement system, and recommendations on ways to improve the system, are encouraged. Based on these comments, the USPTO intends to produce a report that details the patent enforcement landscape in China and identifies any challenges faced by U.S. innovators, together with recommendations for improving the system.
Performance Review Board (PRB)
In conformance with the Civil Service Reform Act of 1978, the United States Patent and Trademark Office announces the appointment of persons to serve as members of its Performance Review Board.
Public User ID Badging
The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on the revision of a continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Changes To Implement the Prioritized Examination Track (Track I) of the Enhanced Examination Timing Control Procedures Under the Leahy-Smith America Invents Act
On April 4, 2011, the United States Patent and Trademark Office (Office) published a final rule that revised the rules of practice in patent cases to implement a procedure under which applicants may request prioritized examination at the time of filing of an application upon payment of appropriate fees and compliance with certain requirements (Track I final rule). The prioritized examination procedure is the first track (Track I) of a 3-Track examination process designed to provide applicants with greater control over when their utility and plant applications are examined and to promote greater efficiency in the patent examination process. The Office subsequently published a final rule on April 29, 2011, indicating that the effective date of the Track I final rule was delayed until further notice due to funding limitations. The Leahy-Smith America Invents Act includes provisions for prioritized examination that emulate the requirements of the Office's Track I final rule, with revised fee amounts for prioritized examination (including a small entity discount) and a provision that addresses the funding limitations that required a delay in the implementation of the Track I final rule. This final rule implements the prioritized examination provisions of section 11(h) of the Leahy-Smith America Invents Act.
Request for Comments on Establishment of a One-Year Retention Period for Trademark-Related Papers That Have Been Scanned Into the Trademark Initial Capture Registration System
The United States Patent and Trademark Office (``USPTO'') is considering establishing a retention period of one year for trademark- related documents submitted on paper that are subsequently scanned into the Trademark Initial Capture Registration System (``TICRS''). TICRS is available to the public through the Trademark Document Retrieval (``TDR'') database on the USPTO Web site. After the expiration of the one-year retention period, the USPTO would dispose of the paper documents unless, within sufficient time prior to disposal, the relevant trademark applicant or owner files a request to correct the electronic record in TICRS, and the request remains outstanding at the time disposal would otherwise have occurred. Specifically, the proposed one-year retention period begins on: September 26, 2011, for papers scanned into TICRS prior to September 26, 2011; or a paper's submission date, for papers scanned into TICRS on or after September 26, 2011. The proposal would reduce the costs currently associated with indefinitely warehousing paper documents, while permitting sufficient time for the review and rarely needed correction of the scanning of such paper documents.
Revision of Standard for Granting an Inter Partes Reexamination Request
The United States Patent and Trademark Office (Office) is revising the rules of practice governing inter partes reexamination to implement a transition provision of the Leahy-Smith America Invents Act that changes the standard for granting a request for inter partes reexamination. The Office is also revising the rules governing inter partes reexamination to reflect the termination of inter partes reexamination effective September 16, 2012, which is provided for in the Act. The Leahy-Smith America Invents Act replaces inter partes reexamination by a new inter partes review process effective one year after the date of enactment of the Leahy-Smith America Invents Act (i.e., September 16, 2012), and provides that any request for inter partes reexamination filed on or after September 16, 2011, will not be granted unless the information presented in the request establishes that there is a reasonable likelihood that the requester will prevail with respect to at least one of the claims challenged in the request. This replaces the prior standard for granting a request for inter partes reexamination that required a substantial new question of patentability (SNQ) affecting any claim of the patent raised by the request. The Leahy-Smith America Invents Act does not revise the SNQ standard for granting an ex parte reexamination request.
Recording Assignments
The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on the continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Rules for Patent Maintenance Fees
The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on the continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Patent and Trademark Resource Centers Metrics
The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on this new information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Public Key Infrastructure (PKI) Certificate Action Form
The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on the continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Fastener Quality Act Insignia Recordal Process
The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on the continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Changes in Requirements for Specimens and for Affidavits or Declarations of Continued Use or Excusable Nonuse in Trademark Cases
In order to help assess and ensure the accuracy of the trademark register, the United States Patent and Trademark Office (``USPTO'') proposes to revise the Trademark Rules of Practice and the Rules of Practice for Filings Pursuant to the Madrid Protocol to provide for the USPTO to require: any information, exhibits, and affidavits or declarations deemed reasonably necessary to examine an affidavit or declaration of continued use or excusable nonuse in trademark cases, or for the USPTO to assess the accuracy and integrity of the register; and upon request, more than one specimen in connection with a use-based trademark application, an allegation of use, an amendment to a registered mark, or an affidavit or declaration of continued use in trademark cases. A lack of ability to rely on the trademark register as an accurate reflection of marks that are actually in use in the United States for the goods/services identified in the registration imposes costs and burdens on the public. The proposed rules will allow the USPTO to require additional proof of use of a mark to verify the accuracy of claims that a trademark is in use on particular goods/services. The USPTO anticipates issuing requirements for such proof in a relatively small number of cases to assess the accuracy of the identifications. The proposed rules will facilitate an assessment of the reliability of the trademark register in this regard, so that the USPTO and stakeholders may determine whether and to what extent a general problem may exist and consider measures to address it, if necessary.
Preliminary Plan for Retrospective Analysis of Existing Rules
The United States Patent and Trademark Office (``USPTO'' or
Trademark Board Manual of Procedure, Third Edition
The United States Patent and Trademark Office (``USPTO'') issued the third edition of the Trademark Board Manual of Procedure (``TBMP'') on May 6, 2011.
Revision of Patent Fees for Fiscal Year 2012
The United States Patent and Trademark Office (Office) is proposing to adjust certain patent fee amounts for fiscal year 2012 to reflect fluctuations in the Consumer Price Index (CPI). The patent statute provides for the annual CPI adjustment of patent fees set by statute to recover the higher costs associated with doing business.
Applications for Trademark Registration
The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on the extension of a continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Representative and Address Provisions
The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on the continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Trademark Trial and Appeal Board Participation in Settlement Discussions
The United States Patent and Trademark Office (``USPTO'' or ``Office'') is seeking comments from stakeholders about the extent to which the Trademark Trial and Appeal Board (``TTAB'' or ``Board'') should become more directly involved in settlement discussions of parties to inter partes proceedings, including oppositions, cancellations and concurrent use cases. The purpose of this notice of inquiry is to determine whether the involvement of an Administrative Trademark Judge (ATJ) or Board Interlocutory Attorney (IA) would be desirable by parties, and if so, how extensively and at what points in proceedings. In addition, to the extent stakeholders voice a preference for assistance in settlement discussions but prefer such assistance to be provided by mediators or individuals other than Board judges and attorneys, it will be useful for the Board to receive suggestions on this option.
Coding of Design Marks in Registrations
The United States Patent and Trademark Office (``USPTO'') is discontinuing the practice of coding newly registered trademarks that include a design element with design mark codes based on the old paper search designations. The USPTO will continue to code all pending applications that contain a design element using a numerical design code system modeled after the International Classification of the Figurative Elements of Marks (``USPTO Design Classification'').
Proposed Collection; Substantive Submissions Made During Prosecution of the Trademark Application
The United States Patent and Trademark Office (USPTO), as part of its continuing effort to reduce paperwork and respondent burden, invites the general public and other Federal agencies to take this opportunity to comment on the revision of a continuing information collection, as required by the Paperwork Reduction Act of 1995, Public Law 104-13 (44 U.S.C. 3506(c)(2)(A)).
Notice of Roundtable and Request for Comments on How To More Effectively Use the Patent and Trademark Depository Library Program
The United States Patent and Trademark Office (USPTO) wants to increase transparency by making USPTO information and materials more publicly available. USPTO information is currently disseminated through a variety of means, including through the Patent and Trademark Depository Library Program (PTDLP). The PTDLP allows the USPTO, through public laws, to partner with state and municipal libraries around the United States to develop core expertise in patents and trademarks to ensure that potential filers have local resources to draw on for assistance and support. The USPTO has undertaken an overall revitalization of the PTDLP to reflect the new 21st Century electronic approach to customer service. As part of this initiative, the USPTO is conducting a public roundtable to obtain input from organizations and individuals on current use of the Patent and Trademark Depository Libraries (PTDLs) and how to more effectively use the PTDLP in the future.
This site is protected by reCAPTCHA and the Google
Privacy Policy and
Terms of Service apply.
